Tomorrow Is Yesterday: Today’s Cases Boldly Going Where Our Blogs Have Gone Before

Sometimes blogging topics are hard to come by. It is often difficult because, as a sage once noted in discussing the search for The Ultimate Computer, one wants to do one’s best, but something like creativity “doesn’t work on an assembly line basis. … You can’t simply say, today I will be brilliant,” insightful, informative or even mildly amusing. But other times topics materialize right before your eyes, as if dropped on your desk by fate or chance, and then they seemingly write themselves, without either assembly lines or much hard work.

We report today on Dr. Seuss Enterprises LP v. Comicmix LLC, et al., a case in the United States District Court for the Southern District of California, raising issues of trademark and copyright law, and that Court’s December 7, 2017 decision denying defendants’ motion to dismiss. That motion sought to dismiss claims that defendants’ mashup of Dr. Seuss and Star Trek in a book to be entitled Oh! The Places That You’ll Boldly Go infringed plaintiff’s trademarks and copyrights. Given that we have written previously about the intellectual property law issues arising in matters involving the Star Trek franchise and the Seuss canon, a chance to write about a case that combines them seems pre-ordained, and for once the struggle to settle upon a topic was not so unsettling. And, in our ongoing mission to relate some of these US law issues to a wider audience, we will revisit some previously-discussed UK alternatives as well as looking at new arguments that fine support in the writings of a Canadian academic.

First, a little about this case. It involves claims of copyright (and trademark) infringement, including fair use/parody/transformative use defenses on the copyright side. The Court’s December 7, 2017 decision summarized the basic facts and claims thusly:

This lawsuit concerns two literary works, one of which is alleged to have infringed the other. Plaintiff Dr. Seuss Enterprises (“DSE”) is … owner of various copyright registrations for and alleged trademark rights in the works of …“Dr. Seuss.” One of Dr. Seuss’s best-known books—and the one primarily at issue in this suit—is Oh, the Places You’ll Go! (“Go!”). Defendants … created a Kickstarter campaign in order to fund printing and distribution of an allegedly infringing work, Oh, the Places You’ll Boldly Go! (“Boldly”). .. Boldly combines aspects of various Dr. Seuss works with “certain characters, imagery, and other elements from Star Trek, the well-known science fiction entertainment franchise created by Gene Roddenberry.” Plaintiff alleges that Boldly “misappropriates key elements” of Go! and four other Dr. Seuss books. Defendants contest this point… Further, Boldly’s copyright page both states that “[t]his is a work of parody, and is not associated with or endorsed by CBS Studios or Dr. Seuss Enterprises, L.P.[,]” and includes the following text: “Copyright Disclaimer under section 107 of the Copyright Act 1976, allowance is made for ‘fair use’ for purposes such as criticism, comment, news reporting, teaching, scholarship, education, research, and parody.”

Upon learning of Boldly and the corresponding Kickstarter campaign, Plaintiff sent Defendants two letters over the span of approximately ten days asserting their exclusive rights in the relevant Dr. Seuss works. When Defendants did not respond to the first letter, Plaintiff on the same day sent a takedown notice to Kickstarter and a second letter to Plaintiff. Kickstarter disabled access to Defendants’ campaign later that day.

Several weeks later Plaintiff’s Counsel and Defendants’ Counsel exchanged letters; Defendants argued their use of Dr. Seuss’s intellectual property was fair, threatened suit, and advised Plaintiff that Defendants would send a counter-notice to Kickstarter to reinstate the Boldly campaign. Plaintiff commenced this suit shortly thereafter.

The central copyright issue the latter decision addresses is the fair use copyright defense, which it addressed under the well-known four factor test under the Supreme Court’s decision in Campbell v. Acuff Rose Music. (The opinion addresses trademark issues as well, but that is for another as far as this blog is concerned). The four non-exclusive factors in considering fair use are:

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

the nature of the copyrighted work;

the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

In applying Campbell, the Court concentrated on the fourth factor, the effect of the use upon the potential market for, or value of, the copyrighted work. The Court did so because it had already found in June 2017 that factor 1 favored defendants because Boldly was “transformative,” albeit not, in the Court’s mind, as a parody. (June 2017 Opinion at 7-8). Indeed, the conclusion that Boldly, a “repurposed, Star-Trek-centric” work, was a “mash-up” rather than a parody (assuming it could not be both) turned on the Court’s conclusion in the June opinion that Boldly did not “target” the original for criticism or ridicule. (June 2017 Opinion at 6-8). This, however, overlooks the fact that the criticism and ridicule elements of the legal parody test, at least as articulated in some places, are disjunctive alternatives, not indispensable individual factors. Id. (a parody “may loosely target an original” by “commenting on the original or criticizing it” and by juxtaposing works “in such a way that it creates ‘comic effect or ridicule’”) (emphasis added).

This, of course, highlights the limitations judges seem to find inherent in the United States intellectual property law’s pre-occupation with parody as a basis for fair use without express extension of such protections to pastiche and other, more laudatory uses under the broader criticism and commentary fair use rubric, which we have discussed at length previously. The same occurred in Castle Rock Entertainment v. Carol Publishing Group, 150 F. 3d 132, 145 (2d Cir. 1998), rejecting the fair use defense in, where the Court noted that “this ‘Seinfeld trivia game is not critical of the program, nor does it parody the program; if anything, SAT pays homage to Seinfeld.’” [Castle Rock, 150 F. 3d at 145; accord Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F. 3d 267, 278 (6th Cir. 2009) (holding that jury instruction that “an homage or tribute” is “not necessarily” fair use is “an accurate statement of the law”) (emphasis added). This illustrates the judicial focus on a certain seemingly required ridicule element of a copyright parody test.

This was in fact further exemplified a September 2017 decision in another Seuss case, Lombardo v. Dr. Seuss Enterprises, LP, the Southern District of New York case that we had discussed with regard to the cease and desist letter issues addressed in an earlier decision. In Lombardo, the Court’s later opinion framed the issue thus:

The key question I must therefore resolve, is whether the Play comments on Grinch by imitating and ridiculing its characteristic style for comic effect, or, as defendant contends, merely exploits the characters, style and themes of Grinch in order “to avoid the drudgery in working up something fresh.” Id. Defendant argues that the Play “does not poke fun of the Seussian rhyming style,” but instead usurps that style in order to sell a commercial work. Nor, according to defendant, does the Play comment on or ridicule the characters and themes of Grinch; it merely “uses Grinch, Cindy-Lou, the Grinch character, and the dog Max as building blocks for a sequential work, featuring those same characters in the Suess-created settings of Mount Crumpit and Who-Ville.”

Defendant’s assessment misses the mark. The Play recontextualizes Grinch’s easily-recognizable plot and rhyming style by placing Cindy-Lou Who — a symbol of childhood innocence and naivete — in outlandish, profanity-laden, adult-themed scenarios involving topics such as poverty, teen-age pregnancy, drug and alcohol abuse, prison culture, and murder. In so doing, the Play subverts the expectations of the Seussian genre, and lampoons the Grinch by making Cindy-Lou’s naivete, Who-Ville’s endlessly-smiling, problem-free citizens, and Dr. Seuss’ rhyming innocence, all appear ridiculous. (emphasis added)

Thus, the focus on criticizing or ridiculing the original work as a necessary element of parody seems somehow deeply engrained despite the disjunctive language and broader approach seen in the tests noted above.

But there are two points to note, one illustrated by our earlier Star Trek Axanar blog post and another illustrated by this Seuss/Star Trek case.

As to the former, express statutory recognition of the homage-like pastiche already exists in some jurisdictions, albeit not in the United States, and such recognition is an expansion past parody—“’pastiche’ would appear to extend well beyond ‘parody’” and that a “defen[s]e of ‘fair dealing for the purpose of pastiche’ may have a broad and controversial scope.” See Griffiths, “Fair Dealing after Deckmyn – The United Kingdom’s Defence for Caricature, Parody or Pastiche,” at 16, in M Richardson and S Ricketson, Research Handbook on Intellectual Property in Media and Entertainment, Edward Elgar, 2017. Since the definition of “pastiche” includes “a musical, literary, or artistic composition made up of selections from different works,” as in “a potpourri” and it is a commonly that “pastiche,” “celebrates, rather than mocks, the work it imitates,” that phrase already seems quite analogous to the definition of “parody mash-up” used in reference to the Seuss/Star Trek or the notion of “satirical pastiche” found elsewhere. See P. Pavis, Performing Korea (2017), at 210.

But what the Seuss/Star Trek decision makes clear, upon a close reading, is that the seeds of expansion may already exist here in the United States without any need to insert “pastiche” into the statutory language. While Seuss Star Trek (and SAT and Lombardo before it) focus on criticism/ridicule of the original work itself being some essential part of parody, the language of the cases on which they rely is actually broader, as noted above. June 2017 Opinion, at 7-8 (a parody “may loosely target an original” by “commenting on the original or criticizing it” and by juxtaposing works “in such a way that it creates ‘comic effect or ridicule’”) (emphasis added).

Even under US law, parody may involve criticism or ridicule, but it may not necessarily have to involve that, and could very well simply evoke commentary or humor. Indeed, Lombardo relied on Abilene Music, Inc. v. Sony Music Entertainment, Inc., but Abilene itself (at 320 F. Supp. 2d 84, 90-91) was much less categorical in its definition of parody, stating:

The heart of any parody is its evocation of the message or style of the original work in order to alter that message or style in a way that humorously expresses the author’s opinion of the original work. See, e.g., Campbell, 510 U.S. at 580, 114 S.Ct. 1164 (defining parody). …Plaintiffs’ argument takes too narrow a view of parody and of the fair use factors. The fair use analysis as a whole avoids quantitative measurements, relying instead on a qualitative examination of the unique characteristics of the work at issue. It is therefore not necessary for a parody to devote a certain proportion of its length to the copied material, focus only on the subject work, or rely entirely on the subject work for its melody or form…Here, the overall message of The Forest is that the world is corrupted and ridden with crime and drugs. In the process of making that point, The Forest sets up a contrast between the assertedly delusional innocence of mainstream culture and the purportedly more realistic viewpoint of the rapper, both by using cartoon characters as subjects and by quoting from and parodying Wonderful World. While the message of The Forest goes beyond simply parodying Wonderful World, that parody is an integral part of the song’s take on the world because it highlights the contrast between the two worldviews, and expresses the rapper’s belief in the realism of his own perspective.

Though the December 2017 Seuss Star Trek decision relies on Abilene, that December 2017 opinion does not seem to appreciate that Abilene suggests a broader approach than the Suess Star Trek court applied. Perhaps, this is a question for ongoing discussion later, even though we have raised it before. In many respects I guess, Tomorrow is Yesterday, as we learned from an early episode in Star Trek, the original series.

Indeed, what is unexamined here also is the notion that Boldly! is a parody of Star Trek rather than, or along with, being a parody of Seuss. One must consider what the legal analysis would be if that were the case. There is, or could be, something jolting in placing the well-known Star Trek adventurers in a milieu in which, for example, a Starship captain and his cohorts known for overly emotive, even pretentious actions, philosophizing, and speechifying in supposedly dangerous, life- (and even human-existence) threatening situations. In the words of Lombardo, that could certainly be seen as a work that “subverts the expectations of” those devoted to the Trekkie “genre, “and lampoons” that franchise by transforming galactic explorers and combatants into those with Seussian “naivete, [akin to] Who-Ville’s endlessly-smiling, problem-free citizens, and Dr. Seuss’ rhyming innocence,” in such a way as to have the Star Trek characters and stories “all appear ridiculous,” or at least funny. Shouldn’t the artist, author, critic or parodist be allowed to use a work as the means of parody and not just as its end. Surely, a satirical take on Donald Trump called Oh! The Great Place You’ll Go (All Have “Trump” Marquees)! or critique of Al Gore’s campaigning style entitled The Borax would each be a satirical parody with plenty of First Amendment protections that even admittedly aggressive rights protectors like Dr. Seuss Enterprises should have a hard time overcoming. Where it is fair to use an original work for the purpose of parody or commentary, there seems little reason to restrict that use to parody of, or commentary on, that work alone. In the world were mash-ups exist, their parodic tendencies are not unilateral, but look in multiple directions Janus-like, and the law could accommodate that reality and those choices. That is because such new works do not merely “supersede[] the objects of the original creation,” but “instead add[] something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Hosseinzadeh v. Klein, Dist. Court, SD New York 2017 (quoting Campbell).

While we must concede that the Supreme Court in Campbell, and lawyers and lexicographers for years before that, assert that parody implies a critical or ridiculing element, we do so while simultaneously pointing out that any ridicule or criticizing element seems to have been grafted onto the word in legal and more modern lexicographical contexts without being a required part of parody’s literary or language heritage. As Linda Hutcheon has pointed out in “Parody without Ridicule: Observations on Modern Literary Parody,” Canadian Review of Comparative Literature/Revue Canadienne de Littérature Comparée 5 (1978): 201-211, the “etymological origins of the word,” its early English definitions, and its literary history belie the notion that parody is restricted to being simply “a ridiculing, belittling literary mode.” In fact:

The Greek paròdia or παρωδία means a ‘counter-song.’ The ‘counter’ or ‘against’ suggests a concept of comparison or, better, of contrast inherent in the meaning. …Dictionaries, however, include in the meanings listed for the word, beyond this notion of a formal literary contrast, the notion of parody’s intent: ‘to produce a ridiculous effect’ (OED). There is nothing in the root to suggest the need for this comic effect or ridicule, as there is in the burla of burlesque, for instance…

The modern use of parody, though, does not seem to aim at ridicule or destruction… It is a combination of ‘homage’ and ‘thumbed nose’ that characterizes that peculiarly modern kind of parody.

The neoclassical penchant for the mock-heroic is similarly related to the modern taste for parody. Here again the background text being parodied is not ridiculed or cheapened. Athough ‘The Rape of the Lock’ amuses, it does so at the expense of its trivial subject, not its lofty manner; the amusement is in fact largely a product of that ironic juxtaposition….

It would seem that it is just such ironic juxtaposition that is described above in transforming Kirk’s overwrought philosophizing into Seussian rhyme, as the artist risks that an attempt at humor falls flat while seeking parody’s reward. (But risk is the business of interesting parodists no less than interplanetary travelers).

For Hutcheon, there seems to be a misunderstanding of the distinction between parody and satire that has imbued the former with the ridicule element more properly defining the latter:

… What seems true too is that the most serious problems of definition arise from the confusion of parody and satire. While both are literary forms, the concept of imitation or contrast need not at all be part of a definition of satire. The major difference between the two lies, however, in the aim… Satire may thus employ literary parody as a device, but with no specifically literary aim whatsoever. Similarly, parody may choose to be satirical in intent; hence the aim of ridicule claimed in dictionary definitions. Both terms imply, perhaps because of the critical distance suggested, a value judgment, but there is a difference between them. Satire uses that distance to make a negative statement about that which is satirized — ‘to distort, to belittle, to wound.” In modern parody in particular, however, no such negative judgment is suggested in the contrast of texts; parodic art both deviates from a literary norm and includes that norm within itself as backgrounded material….

Often, in fact, reverence for the text parodied is more in evidence than any desire to ridicule or even gently mock an outmoded form….

Interestingly, this is not a conclusion informed by some new approach but has underpinnings beyond those of the Greek root word noted above:

This kind of respect for the parodied text may not be at all unique to modern fiction….

… This merits some emphasis in a discussion of parody only because of the confusion with extra-literary satire and the stress on the intent to ridicule found in most work on the subject. It is tempting to turn back to Dr. Johnson’s dictionary for a more satisfying explanation of parody as ‘a kind of writing in which the words of an author or his thoughts are taken, and by a slight change adapted to some new purpose.’ Although one might argue that this defines plagiarism equally well, it does have the merit of not demanding the ridicul­ing, scorning, or destroying of the parodied text…

The very choice of text to be parodied, of course, implies a critical act of evaluation on the part of the parodist. The judgment is in no way restricted to the negative; Fowles finds much to respect in the Victorian manner and mode he so deftly, if self-consciously, parodies in The French Lieutenant’s Wo­man. Only when parody is linked with a satiric intent is the evaluation implied likely to be a negative one, in a moral even more than literary sense.

Though owners of original works may latch on to the reference to plagiarism, the parodist does not deny the copying, but simply urges that he or she can remain a parodist while celebrating rather than criticizing the texts incorporated into the present parody. What literary theories like Hutcheon’s documents, the law should acknowledge and allow, namely that “Parody …seeks, not to debase or ridicule the background material, but rather to come to terms with it, through irony or criticism (in the broadest sense).” Hutcheon, supra, at 211. Others have seen these same conundrum in the various Seuss cases, and certainly (as seen in P. Pavis, Performing Korea (2017), at 205), these nuances can be discussed at some length:

Parody should be clearly distinguished from similar but different notions such as satire, travesty, pastiche, caricature…

Pastiche only imitates the manner and style of an author; it writes and creates in the same “pasta” (“pasticcio”), it imitates a style, but does not make fun of the text, it only enjoys pointing up a few unavoidable lingu9stic tics. Far from seeking to ridicule the author or the one who produced the text, it imitates, with a certain admiration, the text’s devices, to which it pays homage. Pastiche, however, can also be satirical, if the imitator imitates the style of an author by making him say unexpected or comical things. Pastiche invents a new object… In brief, pastiche modifies its object by imitating its style…, inversely, “parody modifies the subject” without modifying the style.

As the law comes to a greater understanding of these nuances, or at least as arguments of that ilk get raised, we may wish to reconsider or refine the Campbell fair use test. Making the fourth factor under the Campbell fair use test something separate from the first prong may present problems. The Seuss Star Trek Court’s analysis presupposes that a work can be both derivative and transformative, and that the original copyright holder can maintain control transformative works through its right to control the market for derivative works. (December 2017 Opinion at 7, 9). Because plaintiff had licensed certain works and undertakings both complementary and complimentary to its Go! Work and related good will, the Seuss Star Trek Court concluded that plaintiff’s licensing to creators of transformative works like defendants’ work would, based on Plaintiff’s past licensing programs, not be unlikely. (Id. at 9). That sort of analysis, however, simply rewards overreach by the licensors—that a would-be licensor would extend its licensing program as far as it could to garner royalties is not alone a justification for finding its potential market one legitimate to protect at the expense of other’s creative choices and legal rights. As defendants there argued, citing Cambridge Univ. Press v. Patton, such arguments become over-inclusive and “circular.” Motion Brief at 12 (available on PACER, in court file as Docket Entry 41-1). Nor is it alone a sufficient justification for examining factor four independently from the first factor. Doing so creates the prospect of allowing only the oxymoronic “authorized” or “licensed” parody, which just seems a little too controlling for a free society. Indeed, in analogous circumstances, the Unites States District Court for the Southern District of New York and the Second Circuit have held that a manufacturer/licensor is not entitled to control, eliminate or receive compensation from the market for humorous uses, be they parodies or homages, to the trademarked or copyrighted aspects of its high end products in new markets. Likewise, if this blogger’s own devotion to mimicking the Seussian style or language had been more fullsome, would the legal writing in Oh, Where Cases Like That Will Go: HOW A CEASE AND DESIST LETTER STOPPED THE PLAY BUT STARTED THE SUIT needed a license to avoid being sued in an intellectual property case, which we also know is now happening to lawyers with much greater frequency. Again, an examination of such issues will and should continue.

Law: our legal frontier. These are the voyages of authorship we summarize. Our live, dear mission: to explore strange law whirls, to seek out law’s life and law’s applications, to boldly go where no blog has gone before.

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About the ILN IP Specialty Group

Headed by Eddie Powell of Fladgate LLP, London, and Norman Zivin of Cooper & Dunham LLP, New York, New York, the ILN's Intellectual Property Group provides the platform for enhanced communication, enabling all of its members to easily service the needs of their clients requiring advice on cross-border transactions. Members of the group meet regularly at ILN conferences and industry events, and have collaborated on discussions and publications of mutual interest.